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PCT

December 31, 2011

As discussed previously here and here, in November the relevant Knesset Committee considered and approved amendments to the Israel patent statute that would enable Israel to become a PCT search authority. As expected, those amendments were approved by the Knesset in second and third readings and published in Reshumot (the Israeli version of the Federal Register) on December 8, 2011. Tellingly, the transitional provision of the amendments provides for their coming into force 30 days after publication, unless the Justice Minister issues an order delaying their coming into force. On December 26, 2011, Justice Minister Yaakov Neeman issued such an order, pushing the relevant date back to April 1, 2012. It’s a fair bet that if the ILPTO isn’t ready to act as a PCT search authority by then, a similar order will be issued sometime in March.

Also on December 26, regulations were published regarding the filing of PCT applications at the Israel Receiving Office. Applicants wishing to file in Hebrew will still need to file at the IB, as applications filed at the ILRO will still need to be filed in English. However, applicants at the ILRO will now be able to file on electronic media, e.g. CD-ROM, which is good news for everyone. The new Regulations will also facilitate the filing of applications over the internet…once the ILPTO has a mechanism in place for doing so (may it be His will, speedily in our day, etc.). On December 29, the ILPTO published an update regarding the implementation of the new regulations.

A welcome piece of news for applicants filing national phase applications in Israel is that the December 26 regulations did away with initial publication fees for national phase applications – a savings of 170 shekels. Curiously, although the cancellation of this fee came into force on December 26, as of this writing the ILPTO’s online fee payment system still includes this fee for national phase applications. Even more curiously, on December 29 the ILPTO published a notice of new fees that will take effect from January 1, 2012, as well as a letter announcing the change; that notice also shows a publication fee for national phase applications. Presumably this is an oversight that will be remedied soon. [UPDATE - January 4: the online payment system now allows national phase applicants to pay the filing fee only, without paying a publication fee.]

November 22, 2011

As a follow-up to the previous post, earlier today the Knesset’s Constitution, Statute and Law Committee – at least the lone member of the committee who was present for the entire deliberation (one other committee member wandered in during the middle and then left shortly afterward, another entered toward the end of the meeting, his gaze fixed on his smartphone) – approved the text of bill amending the patent statute to facilitate the Israel PTO’s becoming a PCT International Search Authority (ISA). The bill was not amended to include provisions to refund PCT search fees if the ILPTO does not conduct a PCT search on time, although the committee chairman did raise the issue.

Having already passed a first reading in the Knesset, the bill will now go back for approval in second and third readings; no speculation here on when that might happen, but as this is not the sort of bill to attract attention, approval should come soon. Actual implementation will take a bit longer, as relevant regulations will also have to be adopted. According to Commissioner Asa Kling, who testified before the committee, initially the option for an ILPTO PCT search will be limited to Israeli applicants; if that goes well, the ILPTO will seek to broaden the scope of eligible IL-ISA users.

November 21, 2011

The Israel PTO’s push to become a PCT search and examination authority is slowly moving forward. This past March saw the publication of a Government-sponsored bill that would make the statutory changes necessary for the ILPTO to become an ISA. This Tuesday, November 22, the Knesset’s Constitution, Statute and Law Committee will be discussing the bill. In fact, it has allotted nearly three hours for this discussion, which raises the question, why? Making Israel an ISA would seem to be a straightforward enterprise. What’s the problem that requires so much time to address?

Rumor has it that, in classic Israeli disrespect-yourself-and-shoot-yourself-in-the-foot fashion, some decision-makers have gotten it through their heads that Israel being an ISA would be a bad idea. Apparently they reason that the ILPTO can’t handle the amount of work it currently has, or that it does a poor job of examination, and therefore it can’t possibly take on the additional work of being a PCT ISA.

To anyone who’s done patent prosecution in Israel over the last ten years or more, it’s clear that that line of reasoning is about as fallacious as yours truly expecting to be elected Pope. During the tenure of the previous the Commissioner, the ILPTO went on a hiring spree and added dozens of new examiners to its existing corps of several dozen. The results have been palpable: waiting times between filing or national phase entry and the commencement of examination has dropped. That’s not just anectodal. Every October the ILPTO publishes statistics on the status of examination, and in general the lag between filing and examination has dropped. Similarly, a look through the Patents Journal shows that the delay in publications under Section 16 (which is a reflection of how quickly the office processes new applications) is on the order of a few months, instead of a few years like it was back in 2005. Although some of that may be attributable to an overall drop in patent filings worldwide in 2009, the fact is that the examination situation today in Israel is better than it was five years ago.

More to the point, though, is that (a) as I’ve argued before, in terms of their ability to analyze the patentability of claims vis-à-vis the prior art, Israeli examiners compare favorably to their counterparts in the USA or most other PCT ISA’s, and (b) making Israel an ISA, coupled with the signing of patent prosecution highway agreements, could augur well for both Israeli applicants wishing to obtain patents abroad, for foreign entities seeking patents in Israel, and for the ILPTO itself. To explain:

First, many of the examiners in Israel speak both English and Russian, and in some cases additional languages. And a fair number of them hold advanced degrees. Compared to some of the absolute garbage that passes for a USPTO office action these days, the ILPTO examination corps on the whole looks positively brilliant. To the extent I have a criticism of the Israeli examining corps, it’s that they don’t always do a good job of expressing themselves, saying things like “I cite publication X against the novelty of claim 1”, without further explanation. But that’s not an inherent flaw in the ability of Israeli examiners. It’s something that can be addressed through proper training – training, which presumably, Israel examiners would receive from WIPO, as they are trained in how to prepare and issue PCT search reports, written opinions and international preliminary examination reports. Inherently, examiners here are on par with examiners in many other countries (and better than the examiners in many parts of the world.) (It would be nice if I could say that WIPO wouldn’t accede to Israel becoming an ISA if the ILPTO wasn’t up to the task, but the fact that it gave Egypt the same opportunity undermines that particular argument.)

Second, there’s a worldwide problem in patent examination: the total number of applications is rising, and the world’s patent offices simply can’t keep up with the work. One of the ways to reduce the overall examination burden is to facilitate work sharing between the offices. Since the substantive requirements for patentability, viz. novelty and inventive step, are similar throughout the world, there’s no reason why work in this regard done in one competent office can’t be utilized by another office. In fact, as discussed in an earlier post, Israel was one of the first technologically advanced countries to recognize this, as for years the ILPTO has facilitated the allowance of patent applications on the basis of the allowance of a corresponding application in the EPO, the USA, or certain other countries. But until recently, Israel has been only a taker in this regard: it has accepted other countries’ examinations in lieu of its own, but no one else accepted Israel examinations.

That began to change earlier this year, when the USPTO and Israel entered a bilateral patent prosecution highway (PPH) agreement. Now the USPTO will accept the results of Israel examination on Israel-first-filed applications to expedite the examination of a corresponding U.S. application. Making the ILPTO a PCT ISA would enable Israel to take this a step or two further. Presumably, once Israel becomes an ISA, the USA will be willing to extend the PPH program to include favorable PCT searches conducted in Israel. Similar agreements could be negotiated with other countries. In and of itself, this would provide an incentive for Israeli applicants to have their PCT applications examined by the Israel ISA, as a favorable examination could then be used as a springboard to faster and presumably shorter examination elsewhere. And those same applications would not need to be examined again once they entered the national phase in Israel. In other words, with respect to Israel applications, becoming an ISA might result in some shifting in the order of examinations, but it would not create a backlog.

Beyond that, by opening itself as an ISA to non-Israeli entities, PCT examinations could prove to be a self-supporting business. The cost of paying an examiner in Israel is less than the cost of paying a USPTO or EPO examiner; the ILPTO could thus set the price for ILPTO PCT examinations below that of the USPTO or EPO, but at point where the ILPTO would profit enough that it could afford to hire additional examiners if necessary, thus offsetting any potential increased local workload.

Where Israel could really set itself apart is if it would offer to refund the PCT search fee if the search isn’t completed on time. This is something that has vexed PCT applicants for a long time: the search is supposed to be part one of the reasons for filing a PCT application, and you have to pay the search pay as part of the filing process, but there’s no mechanism under the PCT to get that search fee back if the search isn’t conducted in a timely fashion. Thus most U.S.-based practitioners have seen cases in which U.S. PCT search results were sent after the 30-month national phase entry date, with no mechanism under the PCT to redress this wrong. (I’ve sometimes wondered how a class action suit under Virginia state law against the USPTO for such a failing would fare. I would expect that a jury of laymen would respond positively to the notion that if you pay for a service to be performed by date X and it’s performed more than a year later, after the it’s no longer needed, you’re entitled to your money back.)

In Jewish law there’s the notion of going “lifnim meshurat hadin”, which roughly translates idiomatically into English as going above and beyond the letter of the law. Here, the ILPTO could set a new standard by effectively telling applicants that even though the PCT allows patent offices to act like common criminals and steal applicants’ money, the ILPTO will provide search results on time or refund the money. Although something tells me that some of the politicians involved in the legislative process (and perhaps some in the ILPTO) will react much like the father in the 1979 film Breaking Away:

September 06, 2011

The Israel PTO will accept patent applications filed in Hebrew, Arabic or English (as discussed in an earlier post), but I’ve never filed a patent application in Hebrew. Nor, as far as I know, has any local practitioner with whom I’ve ever worked or come into contact. Unless you’re only interested in protection in Israel, there’s not really much point: as soon as you go to file elsewhere, you’re going to have to translate to a more commonly-used language. To the extent I’ve encountered Hebrew-language patent applications, they’ve been filed by local pro se inventors.

Which brings up today’s trivia question: if for some inexplicable reason, you have an insatiable desire to file a Hebew-language PCT application, where can you file?

If you’re not sure, here’s a hint: it’s not in Jerusalem. (Don’t ask me why not, I’m still looking into that one.) Not the Vatican either, where you might expect someone to speak Hebrew.

Still not sure? The answer is at that bastion of Hebrew, the PCT International Bureau, in Geneva. (Switzerland, not New York.) It's good to know someone out there is defending the use of Hebrew. Unfortunately, since Hebrew isn’t a language used by any of the PCT International Search Authorities, you’ll still need to file a translation so the ISA can do its job.

My question is, if Israel eventually becomes an ISA itself, as is the plan, will the IL-ISA search Hebrew-language applications? Or Arabic ones? Or will Israelis need to file English translations to have their PCT applications searched at their own ISA? It may make business sense to allow searching of Arabic-language applications, thereby giving the only other potential Arabic-language ISA, the patent office in Egypt (that well-known IP powerhouse), a run for its money. Especially since Arabic, unlike Hebrew, is one of the languages in which PCT applications are published. That means that once there’s an Arabic-language ISA, in principle translations of Arabic-language applications won’t need to be prepared until national phase time.

In contrast, since Hebrew isn’t a PCT publication language, even if the IL-ISA searches Hebrew applications, a translation will still need to be filed to enable publication. And given the miniscule number of Hebrew-language applications filed, there’s probably no need to enable Hebrew-language searches. Sorry, Ben-Yehuda.

June 22, 2011

On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012. Under the project, a patent applicant whose application was first filed in one of the two countries, and for which at least one claim has been found allowable, may request that the other office fast-track a corresponding application in the other country.

As of this writing, the link posted on the USPTO’s site for more information on this project does not contain any country-specific information regarding the program with Israel. However, the Israel PTO site does contain information in English (an explanation of how PPH works in Israel and a form to be filed when making the request), and although this writer wasn’t able to find comparable information in Hebrew from the Hebrew web site’s home page, the Hebrew PPH site is up (as noted in a press release in Hebrew that was sent out via the ILPTO’s email distribution list earlier today).

Some noteworthy points about utilization of the PPH before the ILPTO:

First, according to the information on the ILPTO web site, the claims of the Israel application must be of a scope which is identical to or narrower than that of the claims allowed by the USPTO. (This is the same requirement in place today under section 17(c) of the IL patent statute for acceptance of an application on the basis of allowance of a corresponding application in certain other countries. Note that the English instructions use the word “similar” rather than the word “identical”, which appears in the Hebrew explanation; presumably the Hebrew is in this case more reflective of the ILPTO’s intention.) Presumably, if one’s IL application doesn’t meet this requirement, an amendment may be filed concomitantly with the PPH request in order for the application to comply.

Second, a fee will be required; this is in contrast to applications utilizing the PPH in the USA, where no fee is required. And one may only request PPH status before examination of the Israel application has commenced. It’s not clear if the pre-examination request for additional information that the ILPTO sends before beginning substantive examination counts in this regard; the sensible thing would be for it not to count. Certain documentation will also need to be provided.

Thus, for applicants for whom Israel is the country of second filing, the present PPH program effectively amounts to a speeded-up version of the existing provisions under section 17(c) of the statute; the PPH merely provides an additional way to accelerate examination in Israel, beyond the currently accepted reasons for accelerating examination (e.g. potential infringement, imminent commercialization of the invention, etc.). It therefore appears that applicants for whom the USA is the country of second filing (i.e. who file first in the ILPTO) get the better end of the deal: as has mentioned in a previous post, as of January 1, 2011, an applicant who first files in Israel can have his application examined in accelerated fashion without paying an extra fee, and obtain a substantive office action within three months. Assuming allowance can be gained quickly in Israel, that applicant can use the quick allowance in Israel to obtain PPH status – at no extra cost – for a corresponding application in the much larger and more commercially significant U.S. market.

Although bilateral PPH is not as significant as PCT-PPH, it is a step in the right direction for the ILPTO, and new Commissioner Asa Kling and his staff are to be commended for completing this arrangement less than two months into his term. If Israel succeeds in becoming a PCT search and examination authority, it would stand to reason that Israel will also conclude a PCT-PPH agreement with the USPTO, which would truly be a boon for Israel-based applicants.

The form used for requesting PPH in the ILPTO does raise at least one important question, however: it’s sufficient for PPH applicants to direct the ILPTO to the allowed claims on the USPTO’s public PAIR, instead of supplying a hard copy themselves. That means the ILPTO staff is competent enough to make its way through public PAIR. If that’s the case, why are patent applicants in Israel still required to provide copies of prior art patent publications that can be downloaded from various sites on the internet just as easily as allowed US claims can be downloaded by the ILPTO staff from PAIR?

April 22, 2011

While "patent reform" bills that make little sense continue their advance through Congress toward enactment (see extensive reporting on this at www.patentdocs.org), the same gang of idiots politicians can't get its act together regarding a budget. For the USPTO this means a return to the dark days of fee diversion: without a budget, the USPTO is stuck at last year's funding levels, so that for the remainder of this fiscal year it will be bringing in about $100,000,000 that can't spend. Of necessity, then, the USPTO has to cut planned spending. What a wonderful way for Congress to promote the progress of useful arts and sciences: maim the patent statute AS WELL AS the office charged with implementing that statute. Nice work, guys. (Some backbone from Mr. Obama might also have helped avert this mess.)

Yesterday Dennis Crouch reported USPTO Director David Kappos' announcement to employees explaining how the USPTO plans to deal with the effective budget cuts. Among other things, "PCT search funding is cut severely". Translation: if you want a PCT search report done on time, don't use the USPTO until it gets its budget back. For entities filing with the Israel Receiving Office, that means using the EPO -their only other choice - as the PCT search authority; the Israel PTO is still not qualified as a PCT search authority. The good news for people using the US RO is that they'll still have Australia and Korea (and soon Russia) available for their PCT searches - and at lower cost than the now-grinding-to-a-halt USPTO PCT search mechanism. Plus a good PCT written opinion or IPRP can be used for a PPH request down the road. If Congress doesn't want the USPTO to spend its money, then there's no reason for users of the USPTO to give the USPTO more money than necessary.

November 28, 2010

Although the notion of a meal of thanks is well enshrined in Jewish tradition, Thanksgiving is a distinctly American holiday. Nevertheless, over the weekend the Israel PTO gave Israel patent applicants something to (hopefully) be thankful for.

Seasoned U.S. patent practitioners will recall a time when an applicant who wished to have his application examined on an expedited basis could file a “petition to make special” on several grounds. In 2006 this practice was changed, so that the only remaining grounds for filing a petition to make special are the inventor’s age or health or under the Patent Prosecution Highway. See MPEP 708.02. Otherwise, the petition to make special program was supplanted by the accelerated examination program (MPEP 708.02(a)). While the latter program has been more successful than its predecessor in speeding up the examination of subject applications, its requirements are much more onerous, as the applicant must conduct a rigorous prior art search before filing and essentially prepare the first Office Action for the Examiner.

The comparable program in Israel can be found in Regulation 35(a) of the Patents Regulations, which enables applicants having good reason to petition the Commissioner to expedite the examination of his application. Typically such requests are based on concerns about possible infringement by a competitor and/or the imminent launch by the applicant of a product intended to covered by the claims of the patent application.

The Israel PTO has now announced that as of January 1, 2011, applicants who have filed an application in Israel and who plan file foreign applications claiming priority from that Israel application may request expedited examination on this basis alone. The catch is that as part of the request, applicants must file a declaration stating that the Israel application is “the first one filed on the invention”; presumably what the ILPTO means is that the Israel application is the first one filed anywhere in a Paris Convention country on the claimed invention. In exchange, the ILPTO promises to deliver a “comprehensive” examination report within three months of the approval of the request for expedited examination. Unfortunately, the report will be delivered in Hebrew, although apparently if the applicant so requests, the ILPTO will prepare an English version of the examination report for consideration by the PCT search authority per PCT Rule 4.12.

If, as expected, Israel and the USA sign a Patent Prosecution Highway (PPH) agreement, then the newly-announced policy for expedited examination would make the use of the PPH easier for Israeli applicants, since they would be able to file first in Israel and obtain an examination report during the priority year. Presently the combined filing and initial publication for an Israel patent application is 1194 shekels (about 330 dollars), and the fee for requesting expedited examination is 685 shekels (about 185 dollars). For applicants wishing to obtain a U.S. patent quickly, this is small price to pay to be able to take advantage of the PPH, especially compared to the cost of accelerated examination when search and attorney fees are taken into account. It will also be less costly and faster than utilizing the PCT-PPH route by first filing a provisional application, then using the EPO as the PCT search authority.

Moreover, it does not appear that applicants wishing to take advantage of this new form of expedited examination in Israel would be precluded from filing the same application as a U.S. provisional application on the same day or shortly after the application is filed in Israel (provided that their invention is not a defense technology-related invention, the foreign filing of which is statutorily prohibited).

The big question is whether or not the ILPTO is really capable of providing a “comprehensive” examination report in every case of expedited examination. As I noted in a previous post, some Israeli examiners do a first-rate job, finding the most relevant art and clearly explaining its applicability to the patentability of all pending claims; but other examiners don’t find the best art, and/or mis-apply the prior art they do find, and/or do a poor job of explaining how the art applies to the pending claims, and/or don’t explain how the art applies to each and every claim. If the ILPTO has developed a system for ensuring that all its examiners can provide first-rate examination reports, then this weekend’s announcement is a welcome one.

November 17, 2010

Over the last several years, the USPTO has entered into a number of bilateral agreements under the rubric of what it calls “The Patent Prosecution Highway” (PPH). The general idea is to reduce the overall examination workload at participating patent offices. For example, if someone first files an application at the UK patent office and obtains a favorable examination report there, he may use that favorable report as a basis for expediting examination of a U.S. application that claims priority from the UK application. Under the PPH, rather than waiting in the examination queue in accordance with its filing date, the U.S. application will be moved near the front of the line. Although the USPTO will still conduct its own examination of a PPH-advanced application, anecdotal evidence suggests that US examiners will be more likely to find allowable claims in PPH applications than non-PPH applications.

Unfortunately, in its bilateral form, the PPH is of somewhat limited utility. For starters, participation in the PPH in its bilateral form has somewhat onerous requirements that render the vast majority of applications PPH-ineligible. This is partly due to the fact that PPH in its bilateral form is based on the somewhat anachronistic model that a citizen of country A will file first in country A and then later file in country B, claiming Paris convention priority from the application in country A.

Furthermore, while in theory PPH agreements are bi-directional, in practice this is may not be so when one patent office conducts examination more quickly than the other. To illustrate, although a favorable examination report in a first-filed U.S. application can be used to advance prosecution in the UK, this is unlikely to happen, both because the UKPO conducts examination more quickly than the USPTO, and because most US applicants are likely to enter the UK via the EPO.

In any event, other offices with which the USPTO has established bilateral PPH agreements are the EPO and the patent offices of Japan, Korea, Australia, Austria, Canada, Finland, Germany, Hungary, Russia, Singapore and Spain.

Where the PPH is really useful is in the context of the PCT. The US has PCT-PPH agreements with Austria, Japan, Korea, Russia, Spain and the EPO. Whereas a US-based applicant whose UK application claims priority from a US provisional cannot avail himself of a favorable UK examination report to get his US non-provisional fast-tracked under the PPH, if that applicant files a PCT application claiming priority from his US provisional, has his search done at, say, the EPO or KIPO, and receives a favorable WOISA or IPRP, he can use WOISA or IPRP as basis for entering the PPH. Moreover, according to Carol Bidwell of WIPO, figures to date indicate that US applications filed under the PCT-PPH program have an extremely high allowance rate, and are allowed very quickly. Obviously, this makes PCT-PPH a very attractive option for applicants who want US examination to proceed quickly.

Last year the Israel PTO announced that it was being given the opportunity to become a PCT search authority. In past posts I have argued that although the extending of this opportunity is nice feather in the ILPTO’s cap, the real goal should be to become a PCT search authority recognized by the USPTO. Because the ILPTO will likely charge significantly less than the EPO or the USPTO for PCT searches, becoming a US-recognized PCT search authority could result in an influx of search fees to the ILPTO, while lowering the cost of the PCT process for US- and Israel-based applicants.

Rumor now has it that the ILPTO and USPTO have agreed for the ILPTO to join the PPH; I’ll believe this when I see it, i.e. when an official announcement is made by the ILPTO and/or the USPTO themselves. Even if the rumor is true, it’s unclear that Israel’s joining the PPH would have much immediate impact. Straight-up bilateral PPH would only benefit those Israeli applicants who first file in Israel, then file in the USA claiming priority from the Israel application, then receive a favorable examination report from the ILPTO before the USPTO issues a first OA. That’s a set of circumstances that simply won’t apply to most Israeli applicants. Conversely, for US applicants who file in Israel, the issuance of a Notice of Allowance in the USA will often occur before examination is completed in Israel, and may serve as the basis for allowance of the Israel application under 17(c) of the Israel patent statute. Why invoke the PPH to merely expedite examination when you can gain allowance straight away?

Furthermore, in many cases, the signing of a PPH agreement with the USA would not provide Israeli applicants with any benefits beyond what they already enjoy. This is because, presently, Israeli applicants can take advantage of the PCT-PPH system: many, if not most, Israeli applicants file U.S. provisional applications as their first filings, then file a PCT claiming priority from the provisional. Since Israelis must use the USPTO or EPO for PCT search and examination, a favorable WOISA or IPRP at the EPO will facilitate use of the PPH upon entry into the national phase in the USA.

What would be good about the signing of a PPH agreement is that it would constitute a first step toward becoming a PCT-PPH search authority. Obviously, even if Israel soon joins the PPH, and even if Israel becomes a PCT search authority (a development expected sometime in 2011), the ILPTO will need to prove its mettle as a PCT search authority before the US will be willing to recognize it as a PCT-PPH office. But if the ILPTO can eventually join the ranks of PCT-PPH patent offices, that would be a boon for both the ILPTO and US-based applicants.

October 05, 2010

Earlier today I posted about a notice circulated by the ILPTO in response to the USPTO’s decision not to recognize the priority claim of a PCT application filed at the Israel Receiving Office more than a year after the priority US provisional application was filed. An interesting aspect of that notice that I didn’t discuss in the earlier post was the apparent failure of the ILPTO to grasp the limited scope of the USPTO’s position. Although the notice can be downloaded here, for those who don’t read Hebrew the following is a translation of the notice; pay careful attention to the second paragraph:

1. Recently a decision was given by the U.S. Patent Office on July 28, 2010 regarding a PCT application filed in Israel. Attached is the decision for your review, following redaction of the detils that identify the applicant.

2. According to the decision, the USPTO will not recognize the priority claim if a PCT application is filed at the receiving office more than 12 months after the priority date, even if the “lateness” in filing the application was due days of rest, holidays and holy days on which the receiving office was closed.

3. This decision is based on section 119(e) and 363 of the U.S. patent statute (35 U.S.C. 119(e), 35 U.S.C. 363) and Article 8 of the PCT treaty [redundancy in the original – DJF].

4. I wish to clarify, that mail be submitted to our office until 24:00 of any work day of the [Israel Patent] Office. It is not possible to submit any documents to our Office on days on which the Office is closed, including Fridays, Shabbat [Saturday] eves of holidays and holidays and days on which an appropriate notice is given to the public.

Dr. Meir Noam, Commissioner

The notice implies that the USPTO will never grant a priority claim when the PCT application was filed more than year after the priority date. That’s not what the decision says. The decision says that the USPTO will not accord priority when (a) the priority application is a U.S. application, and (b) the PCT was filed more than year after the priority application was filed (c) on a day when the USPTO itself was open for business – although as noted in the previous post, it appears that not everyone at the USPTO who processes applications is aware of this.

Where the ILPTO got it wrong is that if the priority application is a non-U.S. application, and the RO was closed on the one-year anniversary, the USPTO may recognize the priority claim. Thus, in the present case, had the priority application been an Israel patent application filed on October 11, 2005, then the USPTO probably would have recognized the priority claim for the PCT filed at the ILRO on October 15, 2006, the first day after October 11, 2006 that the ILPTO was open. This is what happened in the case of US 7,700,057, which was filed as a national phase application of PCT/IL2006/001185, which itself was filed on October 15, 2006 claiming priority, inter alia, from two Israel patent applications filed on October 11, 2005. USSN 12/083,371, although since abandoned, was filed under similar circumstances and likewise accorded the priority date of the Israel application.

It’s not clear if the ILPTO understood this subtle distinction or not. It may be that the distinction was understood, and that paragraph 2 of the notice is just another example of the Commissioner’s lack of command of the written word (the earlier examples being the numerous times he sent out Circulars, only to have to subsequently send out one or more “clarifications” because he didn’t express himself clearly the first time). Or it may be that the ILPTO really misunderstood the USPTO’s decision, a sobering thought considering how often reference is made to U.S. case law during proceedings before the ILPTO.

Although in my original post on this topic, I suggested that the USPTO’s position runs contrary to the spirit of the PCT – a view I still hold – it has to be admitted that there’s a certain logic to the USPTO’s position: a PCT application is meant to replace a spate of national filings within the one-year Paris Convention priority deadline. Here, if instead of filing a PCT, the applicant had chosen to file only in the USA, then clearly the U.S non-provisional application would have to have been filed by the one-year anniversary of the U.S. provisional application (or the next day on which the USPTO was open), in accordance with U.S. law. PCT Article 8 addresses this situation in a straightforward manner: insofar as a priority claim is concerned, the effect of that priority claim in the jurisdiction in which the priority application was filed is governed by the local law of that jurisdiction.

What’s frustrating for non-U.S. applicants is that because of both the low cost of filing a provisional, and the fact that a provisional obtains a §102(e) date (as both a sword and a shield, see the recent In re Giacomini decision on this point), many non-U.S. applicants use provisionals as their priority applications. Since those same applicants cannot avail themselves of the USPTO as PCT RO (although as the petition decision point out, under PCT Rule 19.4, they could also file at the USRO which would transmit the application to the IB), they’re stuck with using their local office or the IB for filing their PCT application. And lulled into a false sense of security by PCT Rule 80.5, they get bitten when they discover that the USPTO won’t recognize their priority claim.

I wouldn’t go so far to say that Israeli PCT applicants who file their priority applications in Israel can sleep tight when the one-year deadline for filing their PCT application falls on a date when the ILPTO is closed. While it would make sense for the USPTO and other national patent offices to honor such ostensibly late priority claims – in order for an international treaty like the PCT to work, some accommodation for local differences in workweeks, holidays and the like needs to be made – prudence dictates that the one-year Paris convention deadline be treated as fixed, so that if the deadline falls when the ILPTO is closed, the PCT should be filed at the ILRO before that date (or at the IB). Perhaps this is what the Commissioner was trying to say in yesterday’s notice.

[Revised October 5, 2010, about 12 hours after the initial posting. Thanks to Dr. Richard Korn of Potter Clarkson in the UK for catching the obvious - the provisional application number that wasn't redacted from the document sent out by the ILPTO. That's what I get for blogging after midnight.]

At the end of last year I posted about the plight of an Israeli PCT applicant for whom the USPTO refused to accord priority from his earlier US provisional application. The provisional was filed on October 11, 2005, but the one-year anniversary this date fell on a day on which the Israel PTO was closed, so the applicant filed its PCT at the ILPTO/RO on the next day that the ILPTO was open, viz. October 15, 2006. The catch was that the USPTO was open on October 11, 2006, as was the PCT International Bureau. So upon entry into the national phase in the USA, the USPTO adopted the view that the provisional had expired on the one-year anniversary, and therefore the applicant lost the benefit of that US provisional application.

Subsequent to that post, in February of this year the applicant petitioned the USPTO to accord priority from the provisional. In August the USPTO issued a decision on the petition, in which it again said, “Sorry, Charlie”. That’s not the interesting part of the story. What’s interesting is that this tale has been making the rounds in the community of Israel patent practitioners for some time, but only yesterday did the ILPTO send out the attached notice warning practitioners about this potential problem, along with a copy of the petition decision in which identifying information was redacted. (Click here to download a copy of the redacted petition decision; click here here for the unredacted petition decision.) So while the Commissioner is to be commended for publicizing this issue, one wonders what took him so long to notice there’s a problem and/or to only now see fit to warn Israel practitioners of this potential pitfall.

Even more interesting is the fact that the USPTO itself is inconsistent in its application of the U.S. patent statute and the PCT. The application in question, Yissum’s PCT/IL2006/001187 (published as WO 2007/043057; the US national phase application is USSN 12/078,317 - see the filing receipt - and the provisional application number is 60/724,904) isn’t the only one having a provisional filing date of October 11, 2005 and a PCT filing date in the ILRO of October 15, 2006. There are three others that fit that bill. But this is the only one of the four in which the USPTO refused to recognize the priority claim.

Thus, for example, PCT/IL2006/001179, published as WO 2007/043051, also claims priority to a US provisional filed on October 11, 2005, and was filed at the ILRO on October 15, 2006. But in this case, the USPTO accorded the priority claim for that national phase application, USSN 12/089,421: the filing receipt reflects the priority claim to USSN 60/724,875, and the published patent, US 7,795,887, even shows the priority claim on its front page. Similarly, the filing receipt for USSN 12/088,896, the national phase application of PCT/IL2006/001176 (published as WO 2007/043049), which was filed at the ILRO on October 15, 2006, shows the priority claim to USSN 60/724,794, which was filed on October 11, 2005. And the same is true of PCT/IL2006/001174 (published as WO 2007/043048), filed at the ILRO on October 15, 2006: the filing receipt for the national phase USSN 12/083,222 shows the priority claim to USSN 60/724,790, filed October 11, 2005.

I don’t know if Yissum plans to request reconsideration of its petition and to eventually appeal to the courts. If the USPTO’s position with regard to Yissum’s application is ultimately upheld as being correct, then the putative granting of the priority claims in the other three cases is erroneous, and those applications are not entitled to the priority claims. Conversely, if the USPTO’s position is wrong – a distinct possibility, given its recognition of the priority claims in three other applications in identical circumstances – why is the USPTO hassling Yissum?

June 11, 2010

Much hay was made in Israel last fall when WIPO decided to allow the Israel PTO to try to become a PCT search and examination authority.At the time, the Commissioner of Patents sent out a letter in Hebrew to the ILPTO email list (click here for translation by yours truly) explaining the goings-on that occurred in Geneva leading up to the decision.The local press picked up the story as well, in most cases inaccurately reporting that this meant that Israelis could now file PCT applications.(Actually, the Israel PTO has been a PCT receiving office since 1996.)One firm whose partners are known to be publicity hounds even finagled an interview on one of the television news programs to explain the importance of WIPO’s decision.

Other than that instance of shameless self-promotion, I suspect that much of the hullabaloo was less self-aggrandizement and more of the Sally Field “You like me, you really like me” variety: given the hypocrisy and immorality to which Israel is constantly subjected to at the UN and other international fora, it was nice to receive some positive recognition for a change, from a UN body no less.

Even then, with the decision there was a reminder that politics always plays a role in these sorts of decisions.As explained in the Commissioner’s letter to the Israel patent community, part of the quid quo pro for extending the invitation to Israel was that Egypt would also be given the opportunity to become an ISA.

Egypt?

What a joke.Comparing the Egyptian Patent Office to the ILPTO is like comparing a 1971 Dodge Dart to a 2010 Cadillac.As statistics available on the Egypt PO and the ILPTO websites attest, the Israel PTO has far more examination experience, fielding roughly 3.5 times more applications annually than the Egyptian PO.The just-published PCT Yearly Review also has some interesting statistics in this regard as well.But the Egyptian PO is, evidently, the best the Arab world has to offer, and the Arab world wasn’t going to acquiesce to Israel’s entry into the ranks of PCT search authorities without one of its own being afforded the same opportunity.

Setting the politics of the decision aside, the WIPO decision represents several opportunities for the ILPTO.First, it’s an opportunity for the ILPTO to move into ranks of the world’s first-rate patent offices, instead of continuing to operate, as one local practitioner puts it, as a 19th century patent office in a country with 21st century technology.Israel’s greatest natural resource is it brainpower, and in that regard the examining corps at the ILPTO has the potential to be one of the best in the world.It’s much harder to gain university admission in Israel than it is in, say, the USA, and as a consequence Israeli university graduates tend to be better educated, on average, than their American counterparts.Because many Israelis were themselves born abroad, or are the children of immigrants, particularly from the former Soviet Union, many Israeli examiners have facility in English and Russian or other European languages, which can enhance their search abilities.

But in addition, if the ILPTO becomes and ISA/IPEA, it could simultaneously contribute to the reduction in the backlog at the USPTO and elsewhere, reduce costs for applicants, and increase its own revenues.How so?

First, the ILPTO allows the filing of applications in English, which opens up the possibility of becoming a search authority for PCT applications filed in other jurisdictions, most notably the USA and the EPO.Couple that with the fact that ILPTO examiners cost less to employ than their counterparts at the USPTO or the EPO, and the ILPTO could potentially be an attractive search option for applicants from other countries, just as US applicants have in recent years begun using the Korean Patent Office to conduct PCT searches, partly because of the lower cost vis-à-vis the USPTO, and partly because of the timeliness with which KPO searches are delivered (as opposed PCT searches conducted in the USA, which are generally of low quality and not infrequently delivered after the 30-month national phase deadline has passed).

There are two steps the ILPTO needs to take to make this happen.First, it needs to improve the quality of its examination and reporting.Some ILPTO examiners are already world-class.They find the most relevant art, and they clearly explain how it applies to the claims.But there are still a significant number who continue to practice, or worse, are being trained, to do a poor job: they don’t find the best prior art, or they mis-apply the art that they find, or rather than explain how the art they’ve found applies to each claim, they produce a one-liner along the lines of, “The claims are obvious in view of publication X”.This has to be remedied, so that all of the examiners consistently produce first-rate work.Fortunately, it’s an attainable goal.

The second step involves getting other patent offices to recognize the searches done at the ILPTO.This is where politics re-enters the picture.Because no one, not even an Israeli applicant, is going to want to use the ILPTO to search if that search doesn’t have some cachet outside of Israel.Israel needs to get on board with the US patent prosecution highway, and with other countries that have similar arrangements.While the PPH leaves much to be desired, these days anything that can help an applicant for a US patent decrease application pendency and increase the likelihood of allowance is going to warrant a close look from US-based applicants, particularly if it can help the applicant reduce its costs.

I believe that the current Commissioner appreciates, at least in some respects, the need to make nice with the decision-makers in other patent offices and to come to agreements with them regarding searches and examinations done in Israel.He said as much in his letter referred to above.In the six months or so he has left in office, this would be a good thing for him to concentrate on, and his successor would also do well to make it a priority.

May 30, 2010

As reported in an earlier post, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia.Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance of a corresponding patent application in Israel, because the ILPTO’s experience had shown that Australian examinations weren’t reliable.In September 2009, the Commissioner reversed course and again recognized Australia for this purpose, announcing his decision in a tersely worded statement that provided no reasons for the change of heart.At the time, some speculated, jokingly, that there had been a pay-off of some sort to the ILPTO, perhaps a junket to Australia.

The joke wasn’t far off the mark.In late September, the WIPO general assembly decided to grant Israel the opportunity to become a PCT International Search and Examination Authority.The reinstatement of Australia a few weeks earlier was done in anticipation of the WIPO meeting at which this decision was taken: Dr. Meir Noam, the Commissioner of Patents, reasoned that by reinstating Australia, he would curry favor with Francis Gurry, the head of WIPO and an Australian national.While it’s impossible to know if the ruse worked without asking Mr. Gurry himself, it’s hard to believe that the head of WIPO would condition support for recognition of any particular country as an ISA on how that country regarded the WIPO head’s home country, rather than, say, that country’s competence at prior art searching and analysis.It’s even more difficult to believe that Mr. Gurry actually pays attention to details of Israel patent practice such as whether or not one can piggy-back on Australia to gain allowance in Israel.

While Dr. Noam has admitted that he was trying to get in Mr. Gurry’s good graces for purposes of having Israel named as a potential ISA, it’s hard not to wonder if, in reversing his position on Australia, Dr. Noam wasn’t also angling for a job at WIPO.He has been pushing for stronger ties with WIPO, and during his tenure hired an Israeli national from WIPO’s administrative ranks to be an adjudicator at the ILPTO.In February 2009 the Cabinet decided to limit the terms of high-ranking civil servants across the board, so by last September, it was probably clear to Dr. Noam that he would be out of a job at the end of 2010.Maybe he was hoping that by placing politics, both ILPTO and personal, above substantive concerns about the quality of patent examination in Australia, Mr. Gurry would be more likely to offer him a job.

What is clear is that although during Dr. Noam’s tenure as Commissioner, the ILPTO has made progress on some fronts, in others it still lags behind, and in some ways things have gone precipitously downhill.On the up side, many new examiners have been hired, and according to the ILPTO, as of April 2010 the backlog in patent examination had dropped in most areas to between about 2-3 years from national phase entry to the beginning of examination.Similarly, the backlog in judicial decisions (e.g. patent and trademark oppositions; patent, trademark and design cancellation actions; ex parte appeals within the ILPTO) had dropped significantly – although given the fact that Dr. Noam’s predecessor had failed to render a single substantive patent decision in the over four years he was on the job, things couldn’t have gotten any worse in that regard.And as discussed in a previous post, there is now a publicly-available online database that facilitates checking the status of Israel patent applications.

Nevertheless, not all is rosy.The quality of OAs remains spotty, with many examiners, even senior ones, still failing to explain how the art they cite applies to which claims.In the 1990’s Israel was one of the first countries to introduce electronic filing of trademarks – credit Nurit Maoz, who is still head of the trademarks division, for that – but it still isn’t possible to file a patent application electronically in Israel, let alone to view patent file histories online.Similarly, the quality of the judicial decisions has not always been on the mark.Witness, for example, Dr. Noam’s decision in IL 100816, a case in which a patent containing 1 independent and five dependent claims was at issue.After disposing of claim 1 as being obvious over the prior art, Dr. Noam concluded that the remaining claims, by virtue of being dependent from claim 1, were necessarily obvious and thus invalid – without actually analyzing the additional recitations in those dependent claims to see if they distinguished over the prior art.

Of greater concern is the observation that Dr. Noam has become increasingly authoritarian in his approach to the running of the ILPTO.While it was traditional for Commissioner to circulate letters from time to time clarifying ILPTO policies, Dr. Noam has issued more such circulars, over 80, than any of his predecessors.(One PTO employee I spoke with said that they no longer keep up with all the circulars because there are simply too many.)In several cases, these circulars were so unclear that they necessitated subsequent letters of clarification – in some cases several such clarification letters.

Furthermore, whereas in the past those circulars were issued with respect to questions that had arisen regarding interpretation of the Patent statute and regulations, or policies adopted for administrative convenience, Dr. Noam has in some cases tried to impose new policies that are substantive policy-making and thus properly the province the Knesset (the legislature), not a civil servant.Placing limitations on the filings of divisionals-of-divisionals is one example.Another, on tap for the beginning of July, is a requirement, newly imposed by the Commissioner without legal basis therefor, that applicants provide copies of OAs from corresponding applications in foreign jurisdictions and their responses to the points raised in those foreign OAs – even if the claims pending in Israel are different or the applicant has not yet filed a response to the original OA.(American readers: echoes of the Dudas administration?)

Nor has the Commissioner made his administration a model of transparency.The decision to reinstate Australia was done without explanation, as was the decision to attempt to require applicants to do the ILPTO’s work by imposing draconian reporting requirements.(Curiously, earlier this month, in yet another circular, the Commissioner announced that in the future he would disseminate draft circulars and solicit comments before issuing new circulars.Yet later in the same week, he issued more circulars without going through such a process; and to date, no draft circulars have been disseminated.)Until March of this year, the ILPTO’s web site contained telephone listings of all examiners and many other ILPTO personnel; that list is now gone, replaced with a much more truncated list that doesn’t include examiner telephone numbers. (Here is a copy of the list of ILPTO personnel from March 2009, organized by department.) In addition, in some cases information is sent via email, without being posted on the ILPTO’s web site.And the web site itself doesn’t contain, for example, copies of all ILPTO judicial decisions.

Given some of his more recent actions, there will probably be many in the Israel patent community who will not mourn Dr. Noam’s exit as Commissioner.As for his relationship with WIPO, we will have to wait and see if Dr. Noam ultimately lands a WIPO sinecure, and if he does secure such a post, we may never know if he actively pursued it.One interesting tidbit, though: Mr. Gurry is in Israel this week, and a letter from the Association of Patent Attorneys in Israel (APAI) to its members stated that Dr. Noam urged that there be a “massive” turnout of patent practitioners at a reception for Mr. Gurry to be held tomorrow in Tel-Aviv.So that we can show our collective obsequiousness?